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"Direct Substitution" in Determination of Fictitious Novelty and the Determination of Inventive Step — A Commentary on Supreme Administrative Court Judgment No. 577, Year 114 (Administrative Case)
Article 23 of the Patent Act stipulates: "An invention claimed in a patent application shall not be granted an invention patent if its contents are identical to those of an invention or utility model disclosed in the specification, claims, or drawings of another patent application filed prior to the claimed invention." This is generally referred to as the provision for "fictitious novelty." The requirement that a claimed invention must possess "novelty" is found in Article 22, Paragraph 1 of the Patent Act, which states: "An invention that is industrially applicable may be granted an invention patent under this Act unless one of the following circumstances exists: (1) the invention was disclosed in a printed publication prior to the filing of the patent application; (2) the invention was publicly exploited prior to the filing of the patent application; and (3) the invention was known to the public prior to the filing of the patent application."
Generally speaking, "fictitious novelty" refers to a situation where different applicants sequentially file patent applications for "substantially identical" inventions, and the later applicant is not allowed to obtain a patent due to a violation of Article 23 of the Patent Act. While "fictitious novelty" and "novelty" seem to adopt the same assessment criteria, which considers whether the prior art and the claimed invention are substantially identical, Section 2.6.4 of the Substantive Patent Examination Guidelines points out: "The criteria for determining 'identical content' regarding fictitious novelty, includes (1) entirely identical content, (2) differences that lie only in textual form or technical features directly and unambiguously derivable, and (3) differences lie only in upper- or lower-level concepts of corresponding technical features, also include (4) differences lying only in technical features that can be directly substituted based on common knowledge." That is to say, in addition to applying mutatis mutandis to Section 2.4 "Criteria for Determining Novelty," "direct substitution based on common knowledge" is a ground for negating the "novelty" of a later-filed patent application in view of an earlier-filed (not earlier published) patent application. In other words, Taiwan's patent practice adopts the "enlarged novelty criteria" for determining "fictitious novelty."
However, this criterion of "direct substitution based on common knowledge" is often easily confused with the criterion for determining "inventive step" in actual cases. The Supreme Administrative Court Judgment No. 577, Year 114 (Administrative Case), which relates to such confusion in criterion for determination fictitious novelty and inventive step, affirmed the determination criteria for "fictitious novelty" in the current Patent Examination Guidelines and provided explanations.
The disputed patent in this patent invalidation administrative litigation is a "cap for a mushroom cultivation bag." The first instance court, in view of the technical contents of Exhibit 2 (which is the earlier-filed patent application) submitted by the invalidation petitioner, determined that Feature A of Claim 1 of the disputed patent (adjusting the position of the through-hole edge to connect with the bottom wall) and Feature B of Claim 7 (replacing covering or fastening with gluing) both constitute "direct substitution" based on common knowledge, and thereby concluded that Claims 1 and 7 lost novelty through legal fiction. Upon appeal, the patentee argued that the first instance judgment's rationale characterizing the features as a "direct substitution based on common knowledge" erroneously applied the principles for determining "inventive step" under Section 3.4.1.2 of the Patent Examination Guidelines to the determination of fictitious novelty. Therefore, the patentee asserted that the first instance judgment was not rendered according to the law and rules.
The Supreme Administrative Court clarified "direct substitution" for determining fictitious novelty and inventive step. The Court cited the Patent Examination Guidelines at the time the disputed patent was approved, which stipulated: "the criteria for determining 'identical content,' in addition to applying mutatis mutandis to the "Criteria for Determining Novelty," also includes: "differences lying only in technical features that can be directly substituted based on common knowledge. For example, if a cited document already discloses a fastening element as a screw, and the screw only needs to possess the functions of "fastening" and "being detachable" in the technical means described in the cited document, since a bolt also possesses these two functions, if the claimed invention merely substitutes the screw in the cited document with a bolt, it should be regarded as a direct substitution based on common knowledge."
The Court further explained the following distinctions in determination of fictitious novelty and inventive step:
1. "Direct substitution" in fictitious novelty: This criterion assesses whether the "technical feature itself" before and after substitution has the same function (substitution can only be made based on a single cited document with reference to the common knowledge at the time of filing), and it does "not" require consideration of whether the overall technical means after substitution produces the same function. In other words, there is no need to consider the similarities or differences in the efficacy of the overall technical means after substitution.
2. "Easily accomplishment" in inventive step: This criterion assesses whether the "overall technical means" before and after substituting the technical feature produces the same efficacy, and allows the combination of multiple cited documents for the substitution.
Based on the afore-mentioned differences, the Supreme Administrative Court opined: The earlier-filed application had disclosed the joining function of the gas-permeable pad inside the sleeve cap, and the means for gluing adopted by the disputed patent having a joining function is common knowledge in that technical field. The disputed patent merely substituted the joining means with the gluing means, which was a direct substitution that a person having ordinary skill in the art could make based on common knowledge. Moreover, the claims of the disputed patent did not further define the area/size of the gas-permeable pad, nor was the problem to be solved by the disputed patent related to reducing component costs. Therefore, this (i.e., the overall technical means) did not affect the finding that the disputed patent lacked novelty through legal fiction.
Furthermore, regarding the definition and construction of a "person having ordinary skill in the art" (PHOSITA), the Supreme Administrative Court reiterated: A PHOSITA is a hypothetical person who does not actually exist. A PHOSITA's technical capability and subjective creative ability should be determined on the basis of "extrinsic evidence." In patent litigation practice, the technical classification of the disputed patent and the level of technology present in that specific field at the time the application was filed serve as sufficient reference materials to substantiate the capabilities of this hypothetical role. When the technical capability of this role gradually emerges through the attack and defense means of both parties, it should be objectively reviewed and considered based on rules of logic and empirical rules, under the premise of not violating the laws of nature.
In consideration of the gist of the aforementioned judgment, when facing a fictitious novelty challenge during the patent application process, if the disputed issue lies in whether a claim language, which relates to a detailed/minor technical feature, constitutes a "direct substitution," patent practitioners should assess whether the "feature itself" has transformed into a different function before and after substitution, rather than directly resorting to defenses grounded in "the efficacy of the overall technical means" or in inventive step. If the function of the detailed/minor feature is exactly the same before and after substitution, it is advisable to consider adding other technical features into the claim to further distinguish it from the disclosure of the earlier-filed application.